Overview of the European Union (EUIPO) design system

Comparison with the subject of protection in Japan: A "design" in Japan's Design Law is defined as "the shape, pattern, or color of an article (including parts), or a combination of these that creates a sense of beauty through the visual sense" (Article 2, Paragraph 1 of the Design Law). Under this definition, in Japan, emphasis has long been placed on ``article-likeness,'' and designs have been limited to designs attached to tangible objects. For example, under previous Japanese law, even an image displayed on a screen was recognized as a design only if it was an image for demonstrating the function of the article (operation screen, etc.) and could be considered a part of the article. However, with the 2019 revised Design Law (enforced in 2020), the scope of protection in Japan has been significantly expanded. Specifically, (1) the exterior and interior designs of buildings, (2) image designs that are not recorded on objects (screens and projection images via the cloud, etc.), and (3) images themselves and icons themselves (images separated from objects) can now be considered and registered as "articles." As a result, the design of buildings and interiors can now be protected in Japan as in the EU, and digital designs that were previously not protected, such as UI images of smartphone apps and AR images, can now be covered by design rights. On the other hand, there are still some things that are not subject to protection, and in Japan, there is a phrase that says ``things that give rise to a sense of beauty,'' so there is an interpretation that a purely functional shape cannot conceptually be recognized as a design (in practice, even functional parts can be registered if they have visual characteristics). Also,In Japan, mere decorative images such as screensavers and game play screens themselves are still excluded from registration as ``images unrelated to the function of the product.'' In Japan, logo marks and fonts are also protected as trademarks and copyrighted works, and can only be registered as designs as patterns on articles (separate logos and characters are not recognized as designs), but in the EU, as mentioned above, they can be registered as designs. Furthermore, Japanese law has a tradition of requiring "integrity of product and design," so there remains an attitude that it does not protect abstract designs that are not used on products (e.g. designs that are only graphics on paper). For example, in Japan, designs and character designs themselves are not considered designs, but in the EU, the United States, and China, there are cases where they can be registered as designs. Regarding the protection of parts, Japan introduced the Partial Design System in the 1990s, making it possible to protect only part of an article. In the EU, parts are inherently protectable as "parts of the product," so the idea is similar, but there are differences in how they are expressed in the drawing requirements described below (in Japan, it is the practice to draw parts other than parts with broken lines). Although Japan does not have a system equivalent to the EU's unregistered designs, if a product design that has not been registered is imitated by another company, it may be possible to consider redress under the Unfair Competition Prevention Act (prohibition of imitation of famous designs and form imitation within three years).

Practical points: Attention should also be paid todifferences in rights acquisition strategies due to differences in the subject of protection. For example, a character logo or UI design owned by a Japanese company may not be protected by design rights in Japan, but may be registered as a design in the EU. If they are imitated in Europe, it is worth considering not only trademark and copyright protection, but alsodesign rights protection. In addition, even elements that cannot be registered as a design in Japan (for example, only a monochrome two-dimensional pattern) can be considered a design in other EU countries, so when expanding overseas, we will thoroughly investigate what is recognized as a design in each country to ensure that no rights are left unclaimed. Conversely, there are cases in which the scope of design rights acquired in Japan is narrow overseas. For example, in Japan, rights are obtained for each product, but in the EU, a single design right covers the same design regardless of the product, so there is a risk that a competitor may change the field and appropriate the design. For this reason, when Japanese companies acquire design rights in the EU, they should be aware that they can protect against unauthorized use in categories different from their own products, and should take measures such as injunctions as early as possible if necessary. Furthermore, Functional designs (such as the shape of consumable parts), which are likely to be excluded from protection in Japan, may become valid rights in the EU if they are registered ahead of other companies. From this point of view, while it is possible to provide more flexible and comprehensive protection globally than in Japan, at the same time it is necessary to have a strategy that takes into account each country's system in order to protect your own designs from competition.

Requirements for drawings (representation of designs) in EUTM (EU): There is a limit to the number of drawings (images) for designs submitted to the EUIPO, with a maximum of 7 drawings. Each figure shows a different aspect of the design, such as front view, rear view, plan view, side view, sectional view, view in use, etc., and is submitted in any configuration that the applicant deems appropriate to clearly disclose the design. EUIPO does not require any particular projection method or type of drawing, and the submitter may select a drawing that provides sufficient disclosure at the discretion of the submitter. In extreme terms, if the essence of the design can be conveyed in one image, you can apply with just one drawing, but in the case of a three-dimensional object, the scope of protection may be limited unless the drawings cover all directions. Therefore, in practice, it is common to fully disclose the scope of rights using a total of seven diagrams from multiple angles. In addition, EUIPO allows the submission of photographic images and CG renderings, giving relatively freedom in how drawings can be expressed. For example, if you are designing a car interior, you can submit a photo of the actual item as is. When expressing a partial design, it is permissible to use broken lines to indicate unclaimed parts, or to indicate boundaries using coloring or shading, as in Japan (however, the inclusion of explanatory characters or auxiliary symbols such as arrows in drawings is generally not permitted). It is preferable that the background be a single color with a clear contrast, and EUIPO may ask you to crop or correct the drawing after submission. Furthermore, at EUIPO, "design images are reduced in size and printed in black and white when published in the bulletin," so it is recommended to submit drawings with high resolution and high contrast to avoid losing details (color submissions are possible, and the color PDF version of the bulletin is also displayed in color).

Comparison with Japanese drawing requirements: In Japan, drawings (or photographs, models) for design applications have long been required to be six-sided drawings (orthographic projections of the front, back, left, right, top and bottom). If the item is three-dimensional, if you do not submit views from at least all six major directions, the examination may determine that the disclosure is insufficient. In addition, depending on the shape, perspective views (three-dimensional perspective views), cross-sectional views, exploded views, etc. may be requested. This is because Japanese examination practice has a policy of clearly specifying the scope of rights using the drawings in the application, so it is important that there are no unclear parts for the examiner. On the other hand, in recent years, the Japanese design system has become more flexible; for example, six-sided drawings do not necessarily exist for image designs or building interior designs, so it is sufficient to submit the necessary and sufficient drawings. Although it is possible to submit photographs and CG drawings in Japan, the emphasis has traditionally been on accurate expression through line drawings. In the case of photographs, if there are shadows or backgrounds, it may be difficult to distinguish the details and a correction order may be issued. Therefore, for Japanese applications, it is common to prepare line drawings with clear outlines on a white background whenever possible, and to indicate shading and texture using dotted lines, shading, and other expressions that follow rules. Regarding partial designs, in Japan, it is clearly stated that "non-parts (other parts) are drawn with broken lines," and broken lines are not included in the scope of rights. The dashed line method is also used in the EU, but it is not as strictly defined as in Japan. Furthermore, in Japan, it is possible to include "reference drawings" in drawings to show usage conditions and variations, but according to the examination standards, such reference drawings do not affect the interpretation of rights (submission of reference drawings is prohibited in some countries such as India).

Practical points to keep in mind: (Preparation of drawings that are accepted in each country) When Japanese companies apply for the same design in Europe and Japan, they must be aware of the differences in drawing requirements. Basically, if you create drawings that meet Japan's requirements, they will be accepted in the EU, so a safe bet is to prepare a six-sided drawing plus any necessary additional drawings for Japan, and then use them as is for the EU application. On the other hand, if you submit only the minimum number of drawings according to EU standards, there is a risk that you will need to make amendments when filing your application in Japan, or that your application will be rejected as incomplete. However, if the drawings are modified for use in a foreign country after filing in Japan, there is a risk that the priority claim will not be recognized due to identity of design issues. Therefore, it is ideal to prepare a set of drawings that can be used in all countries from the beginning. (Whether or not to submit a photo) In the EU, submission of photos is allowed, so you can express the feel of the material and texture, but in the Japanese examination, the identity judgment focuses on the shape, so it is more important to clearly show the contour shape than the texture. If possible, you can prepare both a photo and a line drawing, and use a photo for EU and a line drawing for JP (although in recent years, Japan has also officially recognized photo applications). (Restriction on the number of drawings) In the EU, there is a limit on the number of drawings up to 7, so if, for example, a design that has been disclosed in detail using 10 drawings in Japan is submitted to the EU, you will need to be careful about which drawings to omit. Differences in omitted viewpoints may affect judgment, so it is necessary to make judgments such as cutting out less important figures (for example, when there are no features, such as a bottom view). (Drawing of partial design) There is no problem in itself in using a drawing in which parts are indicated with broken lines in a Japanese application as it is in the EU. However, when submitting the same drawing to a country like China that does not have a partial design system, there are cases where it is necessary to redraw the broken lines into solid lines. In this way, each country's drawing regulations vary, so when filing internationally, you should either adapt to the country with the strictest regulations or consider a strategy to adjust the drawings for each country. For each design, IP practitioners must judge which approach balances priority preservation and smooth registration.

Design infringement proceedings in the EU: A registered Community design (RCD) is a single right valid across all EU Member States, and infringement proceedings are subject to the jurisdiction of the Community Design Courts designated in each Member State. Rights holders can bring infringement proceedings in any member state, and court decisions (e.g. injunctions) are in principle valid throughout the EU. The standard for determining infringement is whetherthe design of the accused product gives an ``overall impression that is neither the same nor different'' from the registered design. Specifically, if, in the eyes of an informed user (ordinary user in the industry), the accused design does not give a different overall impression than the registered design, then it will be determined to be infringing. This standard is inextricably linked to the requirement for originality (individuality), and similar designs within the same scope as the design for which individuality was recognized at the time of registration are considered to be infringing because they give the impression of resemblance to the user. A major feature of EU design rights is that the scope of protection does not apply to any product field. In other words, even if a registered design is applied to a product of a different type, if the design is visually the same or similar, it can be considered an infringement.vinegar). Community design right holders can demand injunctions, product recall and destruction, and compensation for damages against infringers. Calculation and proof of damages will depend on the civil procedure laws of each country, but EU directives make it possible to claim damages based on intent or negligence, as well as claims for lost profits and license fees, similar to copyrights and trademarks. In the case of anunregistered design (UCD), rights can also be enforced in the same court, but the right holder must prove that the infringement is "based on imitation." In other words, if the defendant claims that he or she independently created the design, in order to overturn that claim, the plaintiff needs to show that the defendant intentionally copied the design (such as the probability that the defendant was aware of the plaintiff's design). In this respect, infringement of registered design rights can be established only by objective similarity, regardless of the intention of copying. Furthermore, in the EU, a defendant can claim invalidity of a design right in a counterclaim or defense if there are grounds for invalidity. Community designs are a unitary right, so once they are determined to be invalid, the rights expire throughout the EU. In this sense, while a single country's court can cover the entire EU, the risks are also centralized.

Comparison with design right infringement lawsuits in Japan: Judgments of design right infringement in Japan are also established when a person practices (manufactures, sells, etc.) a "design that is the same or similar to a registered design" without permission (Article 23 of the Design Law). Here, "similarity" is defined as a case where, when the consumer's attention is drawn to the design, they create a common sense of aesthetics to the extent that the two designs can be misidentified and confused. The basic point of view is a comparison of the overall visual impression of the design, as in the EU, but in Japan, it is also assumed that the use and function of the goods are the same or similar to determine similarity. In other words, if the product to which the registered design belongs and the accused product have completely different uses (and have different consumer groups), there is a high possibility that infringement will be denied as "dissimilarity of the product" even if the product is similar in shape. For example, even if a "design for an automobile headlight" is registered in Japan, if someone else makes a table lamp that imitates the design, the design may be considered a dissimilar product and no infringement may be filed because the design is different. On the other hand, in the EU, there is room for rights to be exercised even in such cases, as the use does not matter. Japanese design rights holders can request injunctions, damages, and measures to restore credibility against infringers (civil lawsuits are often filed in the Intellectual Property High Court jurisdiction of each district court). As with patents, there is a presumption provision under the Design Law for calculating damages, and a claim can be made based on the sales volume of the infringing product multiplied by the company's profit margin. In Japan as well, the defendant can request an invalidation trial from the Japan Patent Office and fight separately, or have the infringement lawsuit discontinued, but the lawsuit can proceed at the discretion of the court until the trial decision is finalized. In addition, criminal penalties are stipulated in cases of design infringement in Japan, and intentional infringement of design rights in the course of business may result in imprisonment of up to 10 years or a fine of up to 10 million yen (for corporations, a fine of up to 300 million yen) (in recent years, there have been cases of criminal prosecution being brought against malicious counterfeit product manufacturers). From an international perspective, it can be said that the scope of design rights in Japan is somewhat narrower than in the EU, as the scope of design rights in Japan is limited to similar products. However, the appropriation of designs in other industries is handled separately under trademark rights and non-competition laws.

Practical points to keep in mind: (Slippage due to dissimilarity of goods) Japanese companies must also prepare for the possibility that their designs may be used overseas for completely different products. Particularly in the EU, even dissimilarity of products can constitute infringement of design rights, so while the scope of rights is wide, the scope of monitoring is also wide. For example, if your company's furniture design is registered as a design, and another company makes and sells lighting equipment using that motif, you can sue in the EU, but this may be difficult in Japan. Considering the differences in the systems of each country, it is important to conduct counterfeit product monitoring on a country-by-country basis, and to utilize local injunction lawsuits and customs seizures (in the EU, border seizures are possible throughout the EU by registering RCDs with customs). (Measures against the risk of invalidation) In EU litigation, it is common for defendants to claim invalidity, so rights holders also need to be prepared to defend the validity of their designs. In other words, it is best to analyze in advance the points of difference from previous designs that support the novelty and originality of a registered design, and prepare materials for rebuttal to invalidation trials. Conversely, in Japan, the defense of invalidity is not accepted in infringement lawsuits, and a separate invalidation trial must be filed at the Japan Patent Office (if the outcome of the invalidation trial becomes final, the rights will be extinguished retroactively). As such, there are differences in procedures between Japan and the EU when exercising rights, so it is necessary to work with local experts to develop an optimal enforcement strategy. (Rapid response to counterfeit products) Design infringement has a direct impact on the product life cycle. In the EU, it may be possible to obtain a quick injunction through provisional disposition (temporary measures), and Japan also has a provisional disposition system. If your company's designs are infringed, it is important to take full advantage of each country's systems and promptly remove them from the market. In particular, unregistered designs have a short period of time, so it is necessary to take action as soon as they are discovered. (Combination with other laws) Depending on the design, copyright and trademark rights may also be involved. For example, if a character's design is infringed, in the EU you can comprehensively deal with it using design rights, but in Japan, this cannot be covered by design rights and you may have to fight with trademarks and copyrights. It is important to choose the most appropriate legal method for each jurisdiction.

8. Relationship with international applications

International design application under the Hague Agreement (Hague System): Both the European Union (EUIPO) and the Japan Patent Office (JPO) are member offices of the Hague Agreement Geneva Act, which is an international registration system for industrial designs. Therefore, if you wish to apply for both, you have the option of Hague International Application in addition to applying individually. When filing an international application under the Hague Agreement, the applicant files one application with the World Intellectual Property Organization (WIPO), which has the same effect as filing a national application in each of the member countries designated at the time of filing. For example, if a Japanese company wants to obtain a design right in the EU and Japan, by specifying the "European Community (EU)" and "Japan" using the Hague, the application can be completed in both countries in a single procedure. There is no need to appoint a local representative for each country; WIPO will manage the procedures all at once. The language can be unified into English, etc., and application fees for multiple countries can be paid at the same time, which has advantages in terms of administrative efficiency and costs. In the Hague application, it is possible to include up to 100 designs in one application (Japan and EU both comply with domestic systems with a maximum of 100 designs), which also contributes to cost reduction. However, design rights granted by the Hague in each designated country areexamined and generated based on the laws of each country. In other words, even if an international registration certificate is issued by WIPO, the Japan Patent Office will conduct a substantive examination, and if there are reasons for refusal, you will need to take the same actions as in Japan, such as submitting a written opinion. On the other hand, EUIPO only examines formalities, so if you designate the EU in your Hague application, the EU design will be registered promptly if there are no particular problems.It's only. As a result, there may be a time lag in which Japan takes time to review and registration is completed in the EU first. However, with regard to applications in Japan, novelty is determined from the basic filing date (priority can also be claimed) even if the application is filed via The Hague, just like Paris priority, so you will not be disadvantaged if your own design is published during that time. The rights obtained as a result of the designation of a Hague application are equivalent to Registered Community Designs (RCDs) in the EU, and are no different from ordinary design registrations in Japan. Maintenance and management is also required for each country (renewals and pensions are paid for each country), but there is the advantage that name changes and deadline management can be viewed by international registration number.